1816
YWCA ENGLAND & WALES
= v =
GWANG-HOI YOUNG
Nominet UK Dispute Resolution Service
DRS 01816
Decision of Independent Expert
Dated this 26th day of July 2004
Complainant: YWCA England & Wales
Country: GB
Daytime Tel No.: 01865 304211
Fax: 01865 204805
Email: graham.tyack@ywca-gb.org.uk
Reference: YWCA IT05/14
Respondent: Gwang-Hoi Young
Country: KR
Email: yasydney@yahoo.com
Disputed Domain Name
ywca.org.uk
This domain name is referred to below as the "Domain Name".
Procedural Background
The Complaint was lodged with Nominet on 4 June 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 9 June 2004. The notification was sent by fax and by post. A hard copy of the Complaint was posted both to the Respondent’s contact details provided by the Complainant and to Domain Master (the Registrant for the Domain Name). In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 9 July 2004 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).
Sallie Spilsbury, the undersigned (“the Expert”) has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
Formal/procedural issues
Under Paragraph 5a of the Dispute Resolution Service Procedure (“the Procedure”) the Respondent was required to submit a Response to the Complaint to Nominet by 1 July 2004. The Respondent has failed to do so.
Paragraph 15b of the Procedure provides as follows:
If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
Are there exceptional circumstances which would suggest that it is not appropriate to proceed to a Decision?
It is the view of the Expert that there are no exceptional circumstances. The Complaint was sent to the Respondent on 9 June 2004 by fax as well as by post. There is nothing to suggest that this correspondence was not received by the Respondent. The Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.
The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties’ submissions (which consist of the Complaint and its Annexures) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent’s non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure).
The facts
The Complainant
The Complainant is a registered charity, number 217868, registered with the Charity Commission and it is also registered with Companies House as a charitable company, number 137113. A copy of both registration certificates are attached at Annex 1 and 2 to the Complaint. The Complainant works with young women aged 11 to 30 to help them to overcome disadvantage. Through projects in England and Wales, it gives young women the chance to learn together, build their self esteem and self confidence and overcome some of the barriers to their full participation in society, including poverty, unemployment and abuse. It is part of a world wide organisation. A print out from the website www.worldywca.org is annexed to the Complaint at Annex 3 giving details about the activities of the worldwide YWCA.
The name "YWCA" is registered as a trade mark with the UK patent office (registered with effect from 12 November 1998 under trade mark number 2181924 in various classes of the register including charitable fundraising services in class 36 of the register). A copy extract from the trade marks register showing details of the Complainant’s registration is annexed to the Complaint at Annex 4.
The Respondent
A register entry printed out by Nominet on 9 June 2004, and supplied to the Expert, shows that the Registrant of the Domain Name is Domain Master whose address is shown as “For Sale, Seoul, Kr, KR, 100-707. Email address- yasydney@yahoo.com.
The billing contact is shown as “Young Gwanghoi” who is identified by the Complainant as the Respondent. For the purposes of this decision the Expert refers to both Domain Master and Gwang-Hoi Young when she refers to “the Respondent”.
A WHOIS search dated 9 June 2004 has been supplied to the Expert by Nominet. It shows that the Domain Name was registered by the Respondent on 22 January 1999.
A printout of the website at www.ywca.org.uk has been supplied to the Expert by Nominet. It shows that the website is not currently active.
Annex 6 to the Complaint contains a copy of email correspondence between the Parties concerning the Domain Name.
The correspondence seems to have begun in February 2003 with an email from the Complainant to the Respondent (the date of this email is not shown) indicating that the Complainant would like to obtain the Domain Name for use by the charity from the Respondent and referring to the Nominet Dispute Resolution Procedure.
The Respondent replied by email dated 21 February 2003 in the following terms:
My name is Gwang-Hoi Young. I am the owner of the domain: ywca.org.uk.
I would like to make donation for the charity. But I must confirm that below items
… Your YWCA’s reality and representation
…Hanourble (sic) rewards for the donation
How could you prove for me?
The Complainant replied to this email on the same day giving details of the YWCA’s activities and details of the Complainant’s registration with the Charity Commission and Companies House registration. It also referred the Respondent to the Charity Commission’s website where confirmatory details of the Complainant’s status are available.
It seems that no reply was received from the Respondent. On 12 November 2003 the Complainant contacted the Respondent once more by email indicating that the Complainant was anxious to use the Domain Name in the course of business and stating that it would like to “agree with you a procedure for the honourable transfer”. This was followed by a chasing email sent on 19 November 2003.
The Respondent replied on 20 November in the following terms:
I can understand your situation by email. But I have to confirm your entity. How can I do it? I can’t believe throught (sic) only e-mail (including hard copy by post). This domain has really important sense. I hate misusing of this domain. How can I believe you?
The Complainant replied on the same date referring the Respondent to its earlier email on 21 February. It stated:
We could either post the Transfer of Registration Certificate from Nominet UK to you…. Or we could forward it to our sister organisation in Seoul…. And ask them to make contact with you directly in order for you to sign the form. The Transfer of Registration Certificate would be accompanied by headed notepaper and would therefore confirm our identity.
On 24 November the Respondent replied as follows:
I would like making deal through YWCA in Korea. I think best way is cofirm (sic) your real body with my eyes. And I dearly think that protect the YWCA.org.uk for several years. What do you think about it? I worry about misusage through the domain. So I want to check over it. Please understand my position.
Now, give my e-mail address to YWCA in Korea. That is the alternative choice.
There is no further correspondence. A handwritten note in the margin of the copy of this last email included in the annex states “we failed to get any response from the YWCA in Korea 2 June 2004”.
The Complaint states that
“It appears that Mr Gwang-Hoi Young has purchased this domain name with the intention of selling it on (see attached WHOIS query) and he has expressed his willingness to sell or transfer the domain name to us. However, he does not seem to believe that we are who we say we are (see attached e-mails). We have unsuccessfully attempted to find a Korean speaking intermediary from within the YWCA in South Korea and at a local language school in Oxford.”
There is no explicit explanation for the Complainant’s belief that the Respondent purchased the Domain Name with the intention of selling it. The Expert believes that the Complainant is referring to the fact that the printout of the WHOIS search attached at Annex 5 to the Complaint refers to the Registrant’s contact address as “For Sale” (as set out above).
The Parties’ Contentions
Complainant
The Complainant asserts that it has Rights (as defined in the policy) in the name “YWCA” which is an identical or similar name to the Domain Name.
In the Complaint the Complainant states that it regards the continued possession of the Domain Name as abusive in the sense that the Respondent is preventing the Complainant from using a domain name to which it has a legal right.
Respondent
The Respondent has made no submissions.
Discussion and findings
Clause 2 of the Policy provides that a Complainant must prove that:
(I) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.
The onus of proving both of the above elements is borne by the Complainant who must prove them on the balance of probabilities (Clause 2b of the Policy).
The term “Rights” is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant’s business.
Abusive Registration is defined in Clause 1 of the Policy to mean;
A Domain Name which either:
(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
(ii) Has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
The first criterion under clause 2 of the Policy- the Complainant’s Rights
The Complainant has supplied evidence of its trade mark registration in the UK for the word mark YWCA effective from 12 November 1998 (the registration was granted on 7 April 2000 but, in accordance with the usual practice, it was backdated in effect from the date of application; 12 November 1998).
The Complainant has therefore clearly demonstrated that it had rights in the YWCA mark from 12 November 1998.
The Expert is also mindful of the fact that the YWCA is a well known mark in the United Kingdom and across the world (as evidenced by the printout supplied at Annex 3 to the Complaint). Even if the trade mark registration were to be disregarded, the Complainant has demonstrated that it has unregistered rights in the goodwill generated by its mark. Such unregistered rights also constitute Rights for the purposes of the Policy.
The next question that the Expert must consider is whether the Complainant’s YWCA mark is identical or similar to the Domain Name. This is clearly the case (it being customary to disregard the suffix “.org.uk”).
The first criterion under the Policy has been satisfied. On the evidence currently before the Expert, the Complainant has demonstrated on the balance of probabilities that it has Rights in a mark which is identical or similar to the Domain Name.
The second criterion under clause 2 of the Policy- Abusive Registration
Abusive Registration is defined by reference to two alternative limbs relating to (a) registration or acquisition of the Domain Name on the one hand and (b) use made of the Domain Name on the other. In each case the activity must take unfair advantage of or be detrimental to the Complainant’s Rights.
Registration or acquisition
The Domain Name was registered on 22 January 1999. The Expert must therefore consider whether the registration took unfair advantage or was detrimental to the Complainant’s Rights in the YWCA mark at the time of registration. This requirement is clearly stated in the definition of Abusive Registration which is contained in the Policy.
The Domain Name was registered during the period between the Complainant’s application for its trade mark registration for the YWCA mark and the grant of the registration. This raises an interesting question of principle about whether the registration of a Domain Name can be detrimental to the Complainant’s registered trade marks rights when at that time the rights did not exist (although on the subsequent grant of the registration the rights were backdated to November 1998). It is the view of the Expert that the registration of a Domain Name in the period between application and grant of a trade mark registration is capable of constituting an Abusive Registration under the Policy. The Expert notes that to hold otherwise would make a nonsense of the provision that successful trade mark registrations are backdated to the date of application.
However irrespective of this point the Expert has found that in addition to the registered trade mark, the Complainant has independent unregistered Rights in its YWCA mark which were also in existence at the time that the Domain Name was applied for.
Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The indicative factors which may be relevant to the registration or acquisition of the Domain Name are as follows:
There are circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B as a blocking registration against a name or mark in which the Complainant has Rights; or
C primarily for the purpose of unfairly disrupting the business of the Respondent.
As stated above these are non-exhaustive factors which might give rise to an Abusive Registration. More generally under clause 1 of the Policy the Expert must ask whether the registration of the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
Clause 2(b) of the Policy clarifies that the Complainant has to prove that a Respondent’s registration is abusive on the balance of probabilities.
There is no direct evidence before the Expert about the Respondent’s motives for registering the Domain Name. However the Expert may have regard to the surrounding circumstances in order to infer what the Respondent’s intentions might have been (on the balance of probabilities). In this regard the Complainant has drawn the Expert’s attention to the fact that on a WHOIS printout the Respondent’s contact details are shown as ”For Sale”. Alongside this fact the Expert notes that, having been informed by the Complainant in February 2003 that the Complainant wished to obtain the Domain Name for its own use, the Respondent’s email of 21 February 2003 refers to “honourable rewards for the donation [of the Domain Name]”. Although this email was sent a considerable time after registration, it suggests that the Respondent was seeking more than out of pocket expenses in return for the transfer of the Domain Name.
In addition, and as noted above, the YWCA mark is well known in the United Kingdom and across the world (as are its charitable activities). In such a climate, and in the absence of any evidence to the contrary, it is difficult for the Expert to think of a reason which the Respondent might have for securing the registration of the Domain Name other than to take some advantage of the work and repute of the Complainant and/or its worldwide network of sister organisations.
The Expert has considered whether the dilatory nature of the Respondent’s correspondence with the Complainant is indicative of bad faith. However a review of the totality of the correspondence indicated that the delay has been on the part of both Parties and the Expert is not minded to draw any inference on this ground. The Expert also draws no inference from the somewhat unhelpful conduct of the correspondence on the part of the Respondent. In the view of the Expert the Respondent’s insistence that he be sure who he was dealing with is understandable and does not in itself suggest a sinister motive.
The Expert takes the view that on the balance of probabilities the Respondent’s registration of the Domain Name was at the time of registration an Abusive Registration which took unfair advantage of and which was unfairly detrimental to the Complainant’s Rights. The circumstances suggest that the registration was secured in order to sell the Domain Name (the contact details stating “For Sale”). When an approach was made to the Respondent a request was made for an “honourable donation”. Although the meaning of this phrase is unclear it suggests that a reward of some description was sought in return for the transfer. Both of these findings are made in the context of there being no explanation before the Expert about the Respondent’s motive for securing the registration of such a well known name. In the absence of such an explanation the Expert finds that on the balance of probabilities the Respondent was seeking to secure a personal advantage when he registered the Domain Name. Accordingly the Expert makes her finding on the basis on ground 3(a) (i)A of the Policy or alternatively on the wider ground that at the time of creation the registration was Abusive as defined in the Policy.
The Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
The Respondent has todate made no use of the Domain Name nor is there any evidence before the Expert that the Respondent has any plans to use it. Clause 3(b) of the Policy provides that a failure to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.
There is no further evidence before the Expert regarding the Respondent’s use of the Domain Name.
On the facts before her the Expert makes no finding of Abusive Registration on the ground of use.
Decision
The Expert finds that the Complainant has proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that there are Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds that the Complaint succeeds and directs that the Domain Name be transferred to the Complainant.
Sallie Spilsbury
Date: 26 July 2004